To: | Bureau National Interprofessionnel du Co ETC. (tmdept@dpf-law.com) |
Subject: | U.S. Trademark Application Serial No. 88498540 - BNIC1-031 |
Sent: | November 25, 2019 11:55:17 AM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88498540
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Correspondence Address:
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Applicant: Bureau National Interprofessionnel du Co ETC.
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Reference/Docket No. BNIC1-031
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: November 25, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES:
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
Registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods and/or services. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).
Applicant is seeking registration for the mark consisting of a map of the Cognac region of France for “books in the field of alcohol; pamphlets in the field of alcohol; post cards; posters” in International Class 16, “advertising services, namely, promoting and marketing the goods and services of others through all public communication means; promoting public awareness of certified distilled spirits products from the appellation of controlled origin of cognac” in International Class 41, and “educational services, namely, conducting seminars, conferences and workshops in the field of alcoholic beverages and distribution of training material in connection therewith; entertainment services, namely, alcoholic beverage and alcoholic cocktail tastings” in International Class 41.
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark is a generally known geographic place or location;
(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).
In the present case, applicant mark consists entirely of a map of the Cognac region of France. An accurate picture or design of geographically descriptive matter and the word or words that describe the design are legal equivalents. See In re Can. Dry Ginger Ale, Inc., 86 F.2d 830, 832, 32 USPQ 49, 50 (C.C.P.A. 1936) (holding a map of Canada equivalent to the word “Canada” and primarily geographically descriptive of applicant’s soft drinks); East Tenn. Packing Co. v. Armour & Co., 102 USPQ 425, 426 (Chief Exam’r 1954) (finding a map of Tennessee equivalent to the word “Tennessee”); TMEP §1210.02(a).
The attached evidence from Wikipedia, Hill Rag, Elite Traveler, and Cognac Expert shows that the Cognac region is a generally known geographic place or location in the country of France. See TMEP §§1210.02 et seq. The goods and/or services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address. See TMEP §1210.03. Because the goods and/or services originate in this place or location, a public association of the goods and/or services with the place is presumed. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.
When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods and/or services with the place is presumed if an applicant’s goods and/or services originate in the place named in the mark. TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver).
Considering the above, consumers encountering applicant’s mark will immediately understand it as describing applicant’s goods and services as originating from the Cognac region of France. Accordingly, registration is refused pursuant to Trademark Act Section 2(e)(2).
ADVISORY: AMENDMENT TO SUPPLEMENTAL REGISTER
The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s). TMEP §816.04.
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement set forth below.
CLARIFICATION OF LEGAL ENTITY TYPE REQUIRED
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
/Kyle D. Simcox/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
(571) 272-7851
Kyle.Simcox@USPTO.gov
RESPONSE GUIDANCE